By: Curtis Victor

The law, in general, is slow to adapt to technological changes, and the law surrounding copyright infringement provides a great example of the confusion that can result.

In the United States, copyright law is primarily governed by the Copyright Act (the “Act”).[1] Under the Act, the owner of a copyright on a certain original work of authorship generally has the exclusive right use the copyrighted material in certain ways. Importantly for present purposes, one of the exclusive rights included is the right “to display the copyrighted work publicly”.[2]

Copyright protections apply to a wide range of works, including photos, videos, and audio recordings. By default, the creator of the original work is the initial owner of the copyright, and copyright infringement occurs when anyone else uses the copyrighted work without permission from the owner. This permission can come in the form of either assigning ownership entirely or granting a license to an entity or individual to use the work. This raises the question: what happens when a copyrighted work appears on a website without this permission being granted.

Copyright Infringement and Embedding

In the digital age, it is a frequent occurrence for someone’s copyrighted work to appear on someone else’s website. Now, this begs the question: is the work’s appearance or display an instance of copyright infringement? There is a common technique referred to as “embedding,” which refers to the process of inserting HTML code that “incorporates an image, hosted on a third-party server, onto a webpage.”[3] This code “directs the browser to the third-party server” in order to retrieve/display the image/video/content.[4] Previously, this process was commonly referred to as “inline linking.”[5]

A seminal case, Perfect 10, Inc. v. Amazon.com, Inc (2007), posited embedding as a relatively safe option (i.e., limiting one’s potential liability). In this case, the Ninth Circuit adopted what is now known as the “server test.”[6] In the Ninth Circuit’s own words, “a computer owner does not display a copy of an image when it communicates only the HTML address of the copy.”[7] Google was being sued specifically for its Image Search, which initially displays small images called “thumbnails.” Once users click one of these thumbnails, this directs the search engine to display the full-size image. Therefore, the court found that Google was not liable for copyright infringement since the embedding process means that the copyrighted image itself is never stored on Google’s servers.[8] In other words, the court determined that embedding was not “showing a copy” within the meaning of the Copyright Act.

As a result of the Ninth Circuit’s opinion in this case, it was broadly agreed that embedding copyrighted material generally does not give rise to a claim of copyright infringement until recently.[9] However, this understanding has been thrown into doubt by a federal court opinion that fundamentally altered this area of law.

Goldman v. Breitbart News Network

In this case, the District Court for the Southern District of New York explicitly rejected the “server test” as the proper standard for copyright infringement resulting from embedding. The specific copyrighted material at issue was a photo that the plaintiff took of Tom Brady in the Hamptons. The photo soon went viral, and several websites including the defendant’s embedded the photo into news stories. The Southern District of New York began its analysis of the issue by noting that “[o]utside of the Ninth Circuit . . . the server test has not been widely adopted.”[10] Specifically, the court noted that none of the other federal circuits had even directly addressed the issue. Moreover, there had been lower court opinions that explicitly rejected the server test and stated that a website’s servers did not actually need store a copy of the copyrighted work in order to ‘display’ it within the meaning of the Copyright Act.[11]

Ultimately, the court rejected the server test articulated by the 9th Circuit, finding that one need not host the copyrighted material on a server to be liable for copyright infringement.[12] In coming to this conclusion, the court found it persuasive that embedding on the defendant’s website, as opposed to a search engine like Google, does not require the user to affirmatively click on the link in order to display the copyrighted material.[13] The affirmative act of clicking the link required for users of the search engine means that it might make sense to refuse to hold these search engines liable for infringement, but this logic does not extend to other types of websites.

Conclusion

In summary, the current state of the law regarding copyright infringement liability for embedding media is far from clear. The Ninth Circuit is still the only federal circuit court to have weighed in directly on this issue and this holding is not binding on most of the country. However, this opinion might have persuasive value when other courts face similar issues. If another federal circuit disagrees, particularly at the appeals/circuit level, a showdown at the Supreme Court level to ultimately resolve the issue is likely.

In the meantime, it seems clear that embedding copyrighted content, as opposed to posting it directly, is not a surefire way of avoiding liability. This issue is important to consider when embedding photos and videos on your own website, but also is important to understand if anyone else embeds your copyrighted material on another website.

[1] 17 U.S.C. §§ 101-810.

[2] 17 U.S.C. § 106(5).

[3] Goldman v. Breitbart News Network, LLC, 302 F. Supp. 3d 585.

[4] Id.

[5] This is opposed to deep linking, which means merely placing a link on the website that directs the user to a particular page on another site that contains the copyrighted material.

[6] Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007).

[7] Id. at 1161.

[8] Id. at 1163.

[9] For example, the Digital Media Law Project’s page titled Linking to Copyrighted Materials states that “embedding media in your online work should not expose you to legal liability.”

[10] Goldman v. Breitbart News Network, LLC, 302 F. Supp. 3d 585, 591 (S.D.N.Y. 2018).

[11] Id.

[12] Id. at 596.

[13] Id.